Anticipation Requires More Than Disclosing All the Elements

Net MoneyIn v. Verisign (Fed. Cir. 2008)

NMI sued Verisign and others for infringing its credit card processing patent. One of NMI’s claims was found anticipated by a single prior art reference. That reference taught each element in the invalidated claim. However, there was no single example that taught all the elements together.

On appeal, the Federal Circuit reversed – holding that anticipation takes more than simply locating each element within the four corners of a single document.

In its rebuttal, the appellate panel focused on the concept anticipating the invention. To anticipate, the prior art must teach all the claim elements and the claimed arrangement.

Section 102 embodies the concept of novelty—if a device or process has been previously invented (and disclosed to the public), then it is not new, and therefore the claimed invention is “anticipated” by the prior invention. . . . Because the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements “arranged as in the claim.”

Focusing for a moment on arrangement – to anticipate, the reference must teach “all of the limitations arranged or combined in the same way as recited in the claim.”

Applying the rule to this case, the appellate panel found that the prior art reference was not anticipating. The reference disclosed two transaction protocols, but neither protocol contained all of the elements combined in the manner claimed. “Thus, although the iKP reference might anticipate a claim directed to either of the two protocols disclosed, it cannot anticipate the system of claim 23. The district court was wrong to conclude otherwise.”

Means Plus Function: After claim construction, the district court also found NMI’s means-plus-function claims invalid because they lacked any corresponding structure in the specification. On appeal, the Federal Circuit affirmed.

The patent statute allows patentees to draft claims in more generic ‘means plus function’ language. That language allows a patentee claim various elements based on their function. However, means plus function claims are only valid if the specification describes some structure to carry out the proposed function. According to the courts, this structure requirement is separate from any enablement requirement. Thus, some structure must be provided in the specification even if one skilled in the art would not need that disclosure to make the invention.

Here, NMI claimed a “[a bank computer including] means for generating an authorization indicia” but did not provide any corresponding structure in the specification to perform that structure.

On appeal, NMI incredibly argued that the claim was not a means-plus-function claim. The Federal Circuit disagreed – finding that the claim lacks structure.

Searching for structure in the specification, NMI pointed to its recitation of a “bank computer.” Of course that recitation is insufficient.

‘To avoid purely functional claiming in cases involving computer-implemented inventions, we have “consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.” Quoting Aristocrat

Consequently, a means-plus-function claim element for which the only disclosed structure is a general purpose computer is invalid if the specification fails to disclose an algorithm for performing the claimed function.

Holding of MPF claim invalidity affirmed.

85 thoughts on “Anticipation Requires More Than Disclosing All the Elements

  1. 84

    I was guilty of “embodiment-mixing” back in the day. I always felt like it was a little wrong, but I did it anyway.

  2. 83

    Obviously, NMI did a horrendous job claiming and drafting – it seems all they needed to do was present a set of method claims and/or show a block diagram of the computer with an authorization unit) … but why didn’t they argue that the means structure was basically shown in the flow diagrams which were arguably software code within the computer?

  3. 82

    Mooney @ 4:12

    “Class law” ??? “secondary results” ????

    An excellent example of why friends shouldn’t let friends get drunk on white wine, impersonate patent attorneys and post on PatentlyO. Oh wait, that requires actually having friends… Nevermind, …carry on Mooney.

    Dear Michael, I’ve got a one word hint for you “piecemeal.” You’ll have to do the research and get the caselaw on your own dime.

  4. 81

    Dennis, regarding the means plus function issue, I think you meant “corresponding structure in the specification to perform that FUNCTION.” I suppose this is obvious to most readers.

    Is it only me, or do others also see a trend in the Fed Cir demanding more from applicants vis a vis describing the structure pertaining to the function, particularly since Philips, and particularly with respect to bare statements, as in the Biomedino case, where the structure for the function in the means plus function element, “control means for automatically operating said valving,” was found insufficiently described in the specification by the phrase “controlled automatically by known different pressure, valving and control equipment.”

    And what is the worth of means plus function claims these days? I suppose the best is frustrating an opponent’s noninfringement analyses and costs. There may also be advantages in averting Festo, as the equivalents are statutory. I still advise though including a set of means plus function claims corresponding to the system/apparatus/device claims, should the client so wish to pay the extra exxpense, not just for the foregoing reasons but also since the interpretation of means plus function elements could change over the life of the patent. Others?

  5. 80

    Dear Mr. Boy,

    FYI, as an ordinary inventor, I am for strong patent rights. However, by no definition am I a patent troll having manufactured various products since the late 60s in addition to licensing some of my intellectual property as well — similar to IBM.

    You, on the other hand, are in my opinion guilty of libel (and an asswhole to boot).
    An apology would be nice, and nothing else except a drink or two if ever we should meet, and you’d have my complete forgiveness for you asswhole libeling.

  6. 79

    Dear Just an Ordinary Troll ™

    Your query: Do you know if one can be held accountable for libeling a trademarked pseudonym on a popular patent blog?

    My answer: Yes, I do know, but you probably can’t afford my fee. Go ahead a sue ’em is my boilerplate free advice. (Try EDTX. It’s plaintiff-friendly.)

  7. 78

    I think the post mischaracterizes the CAFC’s holding on the means-plus-function issue. The reason “bank computer” was not sufficient structure was because, the court reasoned, a bank computer including a bank computer was nonsensical, not because, as the post suggest, a bank computer is merely a general-purpose computer. Thus, the court was looking for specific means in addition to the bank computer, because of the way the claim was drafted (i.e., “a bank computer including means for…”. However, had the claim been drafted differently, though still claiming the same means, I think the court left open whether the disclosure of the specific-purpose computer (a bank computer) would have been sufficient structure to readily indicate to one of ordinary skill in the art what the corresponding structure was.

  8. 77

    “…unless you can argue that the Examiner isn’t using common sense.”

    Luckily for us, the examiners make it so easy to argue that.

  9. 76

    Do you know if one can be held accountable for libeling a trademarked pseudonym on a popular patent blog?
    Posted by: Just an ordinary inventor(TM) | Oct 22, 2008 at 12:59 PM

    The answer is yes, one can be held accountable for libel, but the burden of proof would be very high on the part of the plaintiff. Can you prove you’re the only person using that particular pseudonym ever? Can you prove the identity of the person you’re accusing of libel? Can you prove the libelous statement was false?

    Trademark has nothing to do with libel. You may be talking about dilution or blurring. But I doubt you’ve got a federal trademark registration for JAOI.

  10. 74

    “Can any of you ladies and gentlemen point me towards caselaw for overcoming a 103 objection based on the features of the claimed invnetion being disclosed in various non-related bits of prior art?”

    Read the KSR Guidelines published by the PTO. (Google it – i don’t have time to find the link). It’s actually pretty good, and details the “rationales” mentioned in KSR. Of course, these rationales aren’t exclusive, but demonstrating (a) that the Office Action doesn’t articulate a reasonable rationale, and (b) that the Office couldn’t do so, even if it tried, should help.

  11. 72

    “Can any of you ladies and gentlemen point me towards caselaw for overcoming a 103 objection based on the features of the claimed invnetion being disclosed in various non-related bits of prior art?”

    Pretty much any class law that doesn’t rely on strict TSM to find non-obviousness will get you there. You need some unexpected results/no reasonable expectation of success/teaching away from the combo, unless you can argue that the Examiner isn’t using common sense.

    Otherwise you’re pretty much fragged over the long haul. Secondary results? Not bloody likely to survive in the big leagues.

  12. 71

    This will be short lived. First, it will not need an actual arrangement, but only need a 102 motivation to make the arrangement. Seeing how 103 motivation to combine is now gone via KSR, the new 102 motivation requirement will be gone as well and we’ll be back shortly to the 102 finding the elements within the four corners test.

  13. 69

    Circuitous, the EPO does indeed see the claims as part of the disclosure. It requires there to be, before issue, conformity between claims and description, and for the description to support the claims. Thus, it is not unusual for a European patent attorney to amend the description during prosecution, by inserting in it words from an originally filed claim, to give enough support for that claim to go through to issue. The amendment to the description is admissible, of course, only if it avoids “adding matter” to the pending application. No easy matter, in the EPO.

  14. 68

    Dear Mr. Boy,

    Ok, here’s a test for admittance to CAFC, to the Bench no less!:

    Do you know if one can be held accountable for libeling a trademarked pseudonym on a popular patent blog?

  15. 67

    “The fact that you claim priority to a provisional having hundreds of claims doesn’t make the disclosure of the provisional part of the non-provisional.”

    Wrong again. See Rule 57(a).

    “…matter that doesn’t carry across from the pro into the non-pro (as filed) is deemed NOT to be part of the reservoir of disclosure of the non-pro, which can be drawn upon, during prosecution of the non-pro, as the basis (written description, no new matter) for any allowable prosecution amendment.”

    In the U.S., claiming priority to a provisional means that the entire provisional (i.e. the summary, the detailed description, the claims, the abstract, the drawings, etc.) IS part of the “reservoir of disclosure” that you can draw on as the basis for any allowable prosecution amendment.

    “So if I file a provisional disclosing A, B and C, then a non-provisional claiming priority from prov disclosing only A and B, then file a CIP disclosing C again, I’m only entitled to the CIP filing date for C, not the filing date of the provisional.”

    Wrong one mo’ time. You’d be a dolt to file such a CIP. But your doltishness would not hurt you too much because you can claim anything that has written description support from your provisional that discloses A, B, and C and be entitled to the filing date of your provisional.

  16. 66

    I am still trying to figure out why people like Moore and Linn are on the CAFC and I’m not. There is no justice in this world.

    Returning to an earlier point I made about being careful to specify what must be enabled by a reference cited in a 102 rejection — the attacked claim, not the reference’s claim — the CAFC (Newman) yesterday drove home the same point.
    link to cafc.uscourts.gov

    In Abbott v. Sandoz, Sandoz tried to scramble this whole 102 enablement issue by saying the PA reference enabled itself and because the PA elements were identical to Abbott’s patent, the PA also enabled Abbott’s patent. Sandoz, in other words, blew off the claim limitations. And Newman blew off Sandoz:

    “an anticipating reference must disclose every element of the claims, and place a person of ordinary skill in possession of the claimed invention” (meaning the claimed invention under attack, not the claimed invention of the PA reference.) It’s just a long way of saying the 102 reference must disclose all elements AND limitations of the claim under attack.

  17. 65

    Max, failure to include the relevant disclosure in each app in a chain of apps breaks the priority claim. The fact that you claim priority to a provisional having hundreds of claims doesn’t make the disclosure of the provisional part of the non-provisional. You need to explicitly include that disclosure in each app in the chain of apps, either as part of the spec or in the originally filed claims of each application. See, e.g. Tronzo v Biomet: “For a claim in a later-filed application to be entitled to the filing date of an earlier application under 35 U.S.C. 120, the earlier application must comply with the written description requirement of 35 USC 112.” So if I file a provisional disclosing A, B and C, then a non-provisional claiming priority from prov disclosing only A and B, then file a CIP disclosing C again, I’m only entitled to the CIP filing date for C, not the filing date of the provisional.

    Sounds like the US and Europe don’t differ on this score, although as I mentioned in my previous post, the US will allow you to copy the claims into the spec without it being considered new matter, so in this sense the USPTO may be more liberal than the EPO (please correct me if the EPO is of a similar view about this). See MPEP 2163.06, part III (“The claims as filed in the original specification are part of the disclosure and therefore, if an application as originally filed contains a claim disclosing material not disclosed in the remainder of the specification, the applicant may amend the specification to include the claimed subject matter. In re Benno, 768 F.2d 1340, 226 USPQ 683 (Fed. Cir. 1985).”)

  18. 64

    “…what you get, all over the world except the USA, is entirely and exclusively dependent on that reservoir of disclosure within the 4 corners and metes and bounds of that PCT description, claims and drawings.”

    I’m aware of that. That’s why I file my PCT applications with hundreds of multiply dependent claims. :-)

  19. 63

    “Simply that, in Europe, matter that doesn’t carry across from the pro into the non-pro (as filed) is deemed NOT to be part of the reservoir of disclosure of the non-pro, which can be drawn upon, during prosecution of the non-pro…”

    Not sure what you mean by “carry across,” but in the U.S., claiming priority to a provisional means that everything in the provisional is in (or “carries across” (?) to) the non-provisional. See, for example, our Rule 78(a)(4). See also, for example, our Rule 57(a). It doesn’t matter if the material is in the “detailed description” or the “summary” or the “claims” of the provisional. There is no formalistic requirement that you “copy” the claims of the provisional into the “spec” of the non-provisional, or that you re-file all of the claims of the provisional in the non-provisional, in order for you to claim priority to the subject matter of the provisional claims.

    “I had assumed it would be the same in any jurisdiction.”

    Never assume.

  20. 62

    Somebody, you might not be practising from a desk in Europe but if ever you file a PCT at the USPTO as Receiving Office you are effectively practising in FTF ROW because, what you get, all over the world except the USA, is entirely and exclusively dependent on that reservoir of disclosure within the 4 corners and metes and bounds of that PCT description, claims and drawings. The abstract and the priority document don’t count as part of the disclosure supporting the claims. So, in a sense, if you have ever filed a PCT, you are practising on behalf of your clients “in” Europe.

  21. 61

    Oh sorry Somebody. Overlooked it. Simply that, in Europe, matter that doesn’t carry across from the pro into the non-pro (as filed) is deemed NOT to be part of the reservoir of disclosure of the non-pro, which can be drawn upon, during prosecution of the non-pro, as the basis (written description, no new matter) for any allowable prosecution amendment. I had assumed it would be the same in any jurisdiction.

  22. 60

    BTW Max, you didn’t answer my question as to why leaving out claims from the provisional when filing the non-provisional would come back to bite me.

  23. 59

    “I would merely comment that Circuitous will get on fine in Europe, but ‘Somebody’ is going to perish, painfully.”

    That’s nice, but I’m not practicing in Europe.

    Your ignorance of U.S. law is showing. So is Circuitous’s.

    BTW, cutting and pasting the claims from the provisional into the “Summary” of the EP application prior to filing really isn’t that difficult. It’s an annoyingly silly and pendantic requirement, but as my secretary can do it in a matter of minutes, I hardly regard it as a major obstacle.

  24. 58

    Sorry everybody. I tried to explain my point clearly and now we all have two opposite answers. (Maybe even as I type this, there are more comments coming). For the time being, I would merely comment that Circuitous will get on fine in Europe, but “Somebody” is going to perish, painfully.

  25. 57

    “Somebody: can you expand on that, please. When you file the non-pro, will all those hundreds of pro claims be present, or will the ‘selected out of the hundreds’ individual pro-claims be making their entrance into the non-pro for the first time during the prosecution of the non-pro?”

    Selected claims are in the non-provisional.

    “Will the absence of the selected individuals in the non-pro as filed come back to bite you?”

    No. Why would it?

    “Upon filing the non-provisional claiming priority to the provisional, in order to enjoy the benefit of those hundreds of provisional claims as 112 disclosure, you will either need to file all of those claims in the non-prov, or copy them into the spec.”

    Wrong. The claims of the provisional are a part of the disclosure. Same as the claims of the non-provisional are part of the disclosure.

    “…if you ever file a continuation, you’ll have to remember to re-file all of those original claims in the continuation and again file a preliminary amendment cancelling most of them, or else you’ll lose your priority claim from the provisional.”

    What? You don’t have to re-file all of the original claims in the continuation to claim priority back to the provisional.

    Do you actually prosecute applications?

  26. 56

    Max is correct: the key battle is defining the problem without hindsight bias. If you’ve already lost the problem-definition battle, you’ve probably already lost the obviousness war.

  27. 55

    Max, your circumspection is well-founded. Upon filing the non-provisional claiming priority to the provisional, in order to enjoy the benefit of those hundreds of provisional claims as 112 disclosure, you will either need to file all of those claims in the non-prov, or copy them into the spec. If you go the former route and want to avoid paying fees for all of those claims, file a preliminary amendment at the same time you file the non-prov – you’ll only pay for the claims in the preliminary amendment (but ONLY if it’s filed with the application, otherwise you pay for all the claims). This is cheaper than copying the claims into the spec, but if you ever file a continuation, you’ll have to remember to re-file all of those original claims in the continuation and again file a preliminary amendment cancelling most of them, or else you’ll lose your priority claim from the provisional. If you copy the claims into the spec you won’t have to remember to do this each time you file an RCE/con. BTW, MPEP explicitly says that copying originally filed claims into the spec is not addition of new matter.

  28. 54

    Somebody: can you expand on that, please. When you file the non-pro, will all those hundreds of pro claims be present, or will the “selected out of the hundreds” individual pro-claims be making their entrance into the non-pro for the first time during the prosecution of the non-pro? Will the absence of the selected individuals in the non-pro as filed come back to bite you?

  29. 53

    “New matter rejections occur with regard to amended/new claims. Amended/new claims are not part of the application as originally filed.”

    Another easy way to provide support for claimed subject matter is to file provisional applications with hundreds of multiple dependent claims. Pretty much covers any combination you’d ever want to claim in the non-provisional(s).

  30. 52

    “Everything is obvious once the problem is identified and one goes out looking for the elements to solve it…”
    writes Michael, above. Well, actually not, if you do “problem/solution like the EPO does it, rigorously excluding hindsight knowledge. We know that the USPTO borrows tools from the EPO. Could it be that USPTO Exrs are, post KSR, routinely using EPO PSA without having the foggiest clue how to use that particular tool correctly. And could it be that US prosecutors don’t yet realise that this is what’s going on, so don’t tick off the Exr for the incorrect use of the by now well- defined (even unassailable) EPO methodology for exploring obviousness in a way that’s fair to both the inventor and those impeded by the issued claims. Mr Factor, I know the name “Blanco-White” because I’m very old. Dropping his name these days won’t impress too many people, even in the UK, let alone mainland Europe. But it’s great that this blog is used by more than just the whippersnappers of the profession.

  31. 51

    Dear “don’t call me Sandy”, I am reposting the question as I am trying to get a patent for an improvement on one that Sandy filed 25 years ago!

    There are 6 improvements, and I would argue that the total combination is not obvious even if the individual elements may be. I am trying to serve the client, not milk him. Yes, we are post-KSR, but there should still be some way to overcome an obviousness objection, even if there is no single structural feature that is rocket science…

  32. 50

    Can any of you ladies and gentlemen point me towards caselaw for overcoming a 103 objection based on the features of the claimed invnetion being disclosed in various non-related bits of prior art?

    After KSR, this seems to be the main problem. Everything is obvious once the problem is identified and one goes out looking for the elements to solve it…

  33. 49

    Michael Factor: welcome to the wonderful world known as post-KSR. Since you’re based outside the USA and many people in your country haven’t the foggiest idea what constitutes good patent practice, my suggestion is: file an RCE, have your client pay for you to fly to the USPTO to interview to the examiner (business class, of course), try to whine the bejeezus out of him until he gives you some claims, take what he gives you, file another continuation on the rest and when that gets finally rejected after another round of interview and response, file an appeal. Fly to the US at least once to meet with the appeal counsel too. Be sure to bill your client up the wazoo for all of this, including billing for the time on the transatlantic flights that you’re asleep, and be sure to add 25% to your U.S. associate’s bills as the price for you being a middleman (in addition to billing for your own time). This approach is may or may not help your client get a patent, but I know other practitioners in your country who make a lot of money doing what I just described.

  34. 48

    Babel Boy, here’s one practitioner who agrees with your distinction between elements and limitations. In this particular case, anticipation was the wrong finding (and yes, in that regard this was a ho-hum decision, although these days I’m grateful any time a court gets it right), but a 1-reference 103 might be in order.

  35. 47

    I am not sure why overcoming anticipation should help. Since KSR the USPTO seems to argue obviousness even if the elements of the claimed invention are scattered through the prior art in different publications.

    I had a rejection a couple of months ago, where the Examiner diligently found prior art to knock out the various dependent claims.

    I filed an additional claim for the whole caboodle, and had it rejected under 103 by the combination of six pieces of prior art. In Europe I would argue mosaicing, citing Blanco White and in Israel, could cite Hughes Aircraft. UBfortunately in the US, there does not sem to be a similar doctrine. There is no teaching to combine. The Examiner went on a fishing trip, looking for the various features in different patents in different classes. His position is basically that having identified the various problems, the various solutions became design features that are arguably trivial. Under the rules, I can’t find anything to object to, but it does seem to place the degree of inventiveness too high. Most mechanical devices are combinations of known elements after all.

    Do any of you know of any caselaw that could help?

    Michael

  36. 46

    I am not sure why overcoming anticipation should help. Since KSR the USPTO seems to argue obviousness even if the elements of the claimed invention are scattered through the prior art in different publications.

    I had a rejection a couple of months ago, where the Examiner diligently found prior art to knock out the various dependent claims.

    I filed an additional claim for the whole caboodle, and had it rejected under 103 by the combination of six pieces of prior art. In Europe I would argue mosaicing, citing Blanco White and in Israel, could cite Hughes Aircraft. UBfortunately in the US, there does not sem to be a similar doctrine. There is no teaching to combine. The Examiner went on a fishing trip, looking for the various features in different patents in different classes. His position is basically that having identified the various problems, the various solutions became design features that are arguably trivial. Under the rules, I can’t find anything to object to, but it does seem to place the degree of inventiveness too high. Most mechanical devices are combinations of known elements after all.

    Do any of you know of any caselaw that could help?

    Michael

  37. 45

    “Ok I am goin out on a limb here, but I believe that KSR was a seriously politically motivated case. As soon as Obama gets a couple of appointments the stage will be set for KSR to go the way of Engineering Corp. v. Automatic Devices Corp. (314 U.S. 84 (1941)).”

    Please frame your prediction in terms of a bet that can be settled within a five year period, maximum.

  38. 44

    Thanks Babel. I can see you have a well-developed legal theory of “element” and “limitation” inside your head, but I have no idea whether anybody else in the USA shares it. The multi-lingual EPO doesn’t have enough love of the English language routinely to resort to such dancing angel legal theories. Instead, it looks at a claim simply as a recitation of “technical features”. Such “features” of course encompass both of your “elements” and “limitations”. Frankly, I’m not convinced that sub-dividing features into elements and limitations serves any useful purpose. Rather, I suspect it takes one further away from legal certainty, and so is inherently harmful. But then I would think that, wouldn’t I, because I’m in polyglot Europe. Imagine having to listen to the Germans explaining to us both why it is necessary to sub-divide “features” into (name any 3, 4, 5 if you want German words meaning “sub-set of feature”). In the “Land der Dichter und Denker” they could easily do it, and would enjoy doing so, just as soon as some court puts them to that task. Hey readers, let’s keep it simple, shall we?

  39. 43

    Ok I am goin out on a limb here, but I believe that KSR was a seriously politically motivated case. As soon as Obama gets a couple of appointments the stage will be set for KSR to go the way of Engineering Corp. v. Automatic Devices Corp. (314 U.S. 84 (1941)). You know the “flash of genius” test. I really don’t put too much weight in KSR. I stick with the Supreme Court of patents . . . the Federal Circuit Court of Appeals. I think SCOTUS spends its time better preventing the executive branch from willy nilly invoking martial law. That, however, is another matter.

  40. 42

    Babel Boy the teaching of any reference is always based upon what a person of ordinary skill in the art would consider the teachings to be. That is the entire concept behind 35 USC 112, first paragraph. If the reference does not comport with 35 USC 112, first paragraph for purposes of its teachings . . . it is no good for the same. That is black letter patent law. If you do not consider the propriety of the teachings of a reference applied to a claim for purposes of 35 USC 112 you might want to reconsider your analysis. In other words 102 and 103 rejections are always viewed in light of 35 USC 112, or what a person of ordinarly skill would believe the teachings to be.

  41. 41

    Max, my understanding of the relationship between PA, all elements, and enablement, is that the PA used as a 102 reference has to explicitly or inherently disclose each and every claimed element AND LIMITATION, and also enable the PHOSITA-dude to perform the claim without undue experimentation.

    But there is a 1-reference 103 rejection in which all the claimed elements must be disclosed but not the claimed limitations. At least that’s my take.

    I’ve never been able to get any traction on this blog with the position that elements and limitations are handled differently. The examiners, courts, and MPEP make virtually no explicit distinction between elements and limitations.

    But in a 102 rejection each and every element and each and limitation has to be disclosed in the single prior art reference. Not so in a 1-reference obviousness rejection. All of the elements have to be disclosed by PA, but the claimed limitations can be added by the examiner or court. It was not the sensor (element) that deep six’d Teleflex, it was the sensor’s position (limitation).

    Since I have never seen an elbow connected to a shoulder, I’ll modify US Aty’s example: if you claim hip bone connected to the thigh bone, the hip bone and thigh bone are the elements (structure), and being connected is the limitation. A 102 rejection must disclose all three.

    But if the reference discloses only a hip bone and thigh bone but no connection (limitation) the examiner can hit you with a 1-ref obviousness rejection by claiming the connection would be obvious to one of ordinary skill in whatever art produces skeletons. But at a minimum the 103 reference or references must disclose the structure.

    I believe if you look at the case law very closely you will find that elements (nouns) are never deemed obvious, only limitations (adjectives) are subject to obviousness. The more adjectives your claim has, the higher the risk of a 103 rejection and the lower the risk of a 102. This is called “the principle of conservation of grammatical differentiation.”

    Ha, ha, ha . . . I love it. I just pulled that out of my . . . hip bone.

  42. 39

    All elements rule is one part but if the claim says the elbow is connected to the shoulder — then — to anticipate the prior art must also show an elbow and a shoulder and the elbow has to be connected to the shoulder for anticipation.

    Likely with KSR, one might get rejected that all permutations that are within common sense usage are obvious.

    So what is new in this case — any one want to comment without cherry picking language and ignoring other language that contradicts from the case.

    Mooney is right. This case is ho hum boring

  43. 38

    Perhaps this is an interesting case because it seems so clear to most of us, yet the district court got it wrong stating:

    “All of the limitations of claim 23 can be found within the iKP reference. A simple combination would produce the system described in claim 23 of the ‘737 patent. That no specific example within iKP contains all five links does not preclude a fincing of anticipation.”

    The District Court did just what Examiner’s often do; and this highlights the need for experienced Examiner’s and technically savvy Judges.

    A key word search results in all the right words, so the Examiner writes it up and mails it out without ever understanding just what the cited references actually discloses.

    Judges, patent attorneys and Examiner’s failure to understand the technical limitations in the art often results in poor applications, invalid patents and unecessary litigation. Often prior art describes a system that simply won’t work……computers just don’t work that way. but Examiner’s will use the description as a rejection anyway, or applicants will argue their system works a certain way when its just not possible.

    One of the best fights left against obviousness is that the two references cannot technically be put together. It won’t work, or at least it would take an inordinate amount of experimentation to figure it out.

    Unfortunately, you have to find an Examiner or Judge or Attorney that understand the technology to win that argument.

  44. 37

    “I wouldn’t be proper for me to tell you since it’s one of my cases.”

    Oh. I thought you were referring to some case law.

    “Why don’t I just file a specification listing lots of elements and then add a boilerplate paragraph.”

    That’s what I do.

    “Could I sue a lot of people?”

    Sure. The real question is: can you win?

    “Like I said there would be implementation issues if D was brought in with ABC.”

    Sounds more like a lack of enablement problem, not a written description problem.

    “I personally don’t mix-n-match embodiments…”

    Thank you. But there’s nothing that forbids you from mixing and matching embodiments as long as your rejection is one of obviousness, not anticipation.

  45. 36

    “Which case is that?”
    I wouldn’t be proper for me to tell you since it’s one of my cases.

    “That’s easily provided by boilerplate. You see it at the end of just about every patent. In the same manner that examiners use that boilerplate to mix and match different embodiments in a reference to reject a claim, applicant uses it to show possession of the claimed invention.”

    Why don’t I just file a specification listing lots of elements and then add a boilerplate paragraph. Could I sue a lot of people? I personally don’t mix-n-match embodiments, but know that does occur. Like I said there would be implementation issues if D was brought in with ABC. Incidentally, this response seemed to have done with too much haste. My conclusion in the previous action was basically that there was no support for D in combination with ABC. They didn’t address that argument (poor reading comprehension) and instead only pointed out that ABC was located in paragraph 6.

  46. 35

    “The case that originally led me to post in this thread…”

    Which case is that?

    “There was no suggestion that elements from one embodiment can be further integrated into elements from the second embodiment.”

    That’s easily provided by boilerplate. You see it at the end of just about every patent. In the same manner that examiners use that boilerplate to mix and match different embodiments in a reference to reject a claim, applicant uses it to show possession of the claimed invention.

  47. 34

    Does anyone know why Public PAIR has been almost routinely unavailable for the past week or so? I guess too many people were able to enter the Captcha clues, despite the apparently unnecessary length of the words and numbers and the illegibility of most of the clues. Curses!!

  48. 33

    Babel, I’m with you but, all the same, can you clarify. When you write “enable the claim” do you mean “enable at least some pinpoint that is somewhere within the ambit of the claim”? Not the same thing as Liebel enablement over the full width of the claim, right?

  49. 32

    “The prior art must be an enabling teachings in order to anticipate.” — The Man

    The point is good, but be careful. Must enable what? The PA must not just enable itself in order to anticipate, it must enable the claim that it is being applied against.

    The CAFC did not take this 112 tack in NMI, but it’s approach seems to me to be samey-same — all the elements must be disclosed in the PA reference and they must be tied together in the same way the challenged claim ties them
    together. Why drag 112 into the analysis if you don’t have to?

    AllSee, I always loved that Richardson v. Suzuki case and the way that kid finally beat the * out of Suzuki. Another Kearns story. Besides, if you’ve ever tried to change the oil filter on a Suzuki Intruder or Grand Vitara, you’d diss Suzuki, too. Dolts.

  50. 31

    No idea except that, in England, what comes before and deprives of novelty would, if coming afterwards, infringe. And vice versa. Would it be the same in USA or does the DOI mess up that nice simple symmetry?

  51. 30

    Does the language presented here regarding anticipating an invention apply to an infringement analysis as well?

  52. 28

    “besides “somebody’s” comment, you also have a little problem in that the claims themselves are a part of the application and are within the four corners of the document (the original claims cannot be considered new matter beyond the specification).”

    I don’t have any problems. New matter rejections occur with regard to amended/new claims. Amended/new claims are not part of the application as originally filed. With regards to somebody’s comment, I still believe that the specification has to convey that you had possession of the invention as claimed, i.e. “as arranged in the claim”. The case that originally led me to post in this thread fits the fact pattern of this decision in that there are separate embodiments. Claims as originally filed were directed to one embodiment and a subsequent amendment brought in an element from the other embodiment. There was no suggestion that elements from one embodiment can be further integrated into elements from the second embodiment. In fact the combination would have implementation issues that the specification did not address.

  53. 27

    Re: The Courts statement that “we have “consistently required that the structure disclosed in the specification [especially for a means-function claim element] be more than simply a general purpose computer or microprocessor.”
    I think this “consistency” has not always been so consistent in older cases [e.g., Hayes Modem?], as so broadly stated here. As to claim elements that are well known prior art features, there is long established 112 authority that such well known components need NOT be described in any detail in the specification, and would make specifications excessively large. However, recent CAFC cases have been consistently saying that where a novel algorithm for a computer is being claimed, at least that claim element needs to be illustrated in a flow chart or otherwise described in the specification. This particularly impacts many “business method” and gambling patents.

  54. 26

    So, according to the CAFC, the hallmark of anticipation is “prior invention”. Therefore (it seems to me) whatever is the CAFC “take” on novelty (“same arrangement”) it must also hold for prosecution amendments. Otherwise the amended app will be claiming an invention that wasn’t there in the app, when the app was filed. So, why doesn’t the USPTO exert the same severity as the EPO’s “novelty test” when it comes to deciding whether to admit prosecution amendments? (I asked the same question upthread but it got ignored. So, I’m asking it again).

  55. 25

    Hey Mooney:
    This is exactly what I was referring to in our earlier posts. The prior art must be an enabling teachings in order to anticipate.

  56. 24

    Let’s compare a cardboard box to a cave shall we? Cardboard box at least starts out clean, caves, do not.

  57. 23

    “The “teaching of all elements” alone should make the application obvious – no?”

    No. A reference may include every word in the claim spread among hundreds of pages. It doesn’t necessarily render a claim obvious. It all depends on the facts.

    anonymous – notice the difference between “teaching” and “words” – your counterpoint falls very short.

    2600examiner,
    “I think I’m going to steal some of the language of that decision and argue in support of a new matter rejection that the specification ‘must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.”

    besides “somebody’s” comment, you also have a little problem in that the claims themselves are a part of the application and are within the four corners of the document (the original claims cannot be considered new matter beyond the specification).

  58. 19

    First of all, 102 test has been there for years and I just don’t know why you grown-ups make such a big fuss about it. The rational is not changed and the final ruling supports the existed rational. So why bother? just Laugh it off.

  59. 18

    Mundane, that’s probably because you and your roomate Mooney were sharing a mundane cardboard box in the subway station. I bet you had a few empty packs of Lucky Strikes and empty beer cans. Heck, McGyver could have made a helicopter from that “mundane” stuff…

  60. 17

    Idk about you guys, but at the time of the invention of the transistor I didn’t have any slabs of silicon sitting around my house/workspace/bar.

  61. 16

    I am surprised that the following cases were not present in the opinion.

    Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). (The elements must be arranged as required by the claim, though identical terminology is not required) and In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).

    These are the seminal Federal Circuit precedents for 102 identicality.

  62. 15

    Mooney, if you just said “combining old elements” that would be enough. Everyone would understand and probably agree. Its the “mundane” in “combining old, mundane elements” where you lose credibility (and sound like a pom pous asswhole).

    One of the best inventions in recent history, the transistor, was made from old mundane elements like a mundane old slab of silicon and a few trivial calculations.

    I guess if Shockley had run into an attorney with an attitude like yours first, he would have gone home with his tail between his legs.

  63. 14

    Monday, October 20, 2008 @ 5:30 PM: Public Patent Application Information Retrieval (PAIR) is unavailable. We apologize for any inconvenience

  64. 13

    Now we’re really seeing the CAFC getting close to the EPO: the concept “what is a document disclosing” is decisive for threee situations, 1) novelty 2) prosecution amendments and 3) entitlement to an earlier declared priority date. All three depend on the earlier document having “planted the flag” on the decisive date. So, all three involve the same “novelty test”. The commentator above boldly dismisses a novelty test as irrelevant for the 112 “written description” requirement. Looking into the future, but I see that as what’s coming, unless the CAFC suddenly stops being influenced by Europe.

  65. 12

    “I think I’m going to steal some of the language of that decision and argue in support of a new matter rejection that the specification ‘must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.'”

    That’s nice. But satisfying the written description requirement doesn’t require such exactitude.

  66. 11

    “The “teaching of all elements” alone should make the application obvious – no?”

    No. A reference may include every word in the claim spread among hundreds of pages. It doesn’t necessarily render a claim obvious. It all depends on the facts.

  67. 10

    “The “teaching of all elements” alone should make the application obvious – no? Any arrangement of the acknowledged prior art elements would merely be a matter of common sense. Very little motivation is necessary to combine a reference with itself.”

    Word. This is the way that a typical “treatise”, e.g., a treatise on “databases” or some other familiar topic, is often used to tank a claim combining old, mundane elements.

  68. 9

    I think I’m going to steal some of the language of that decision and argue in support of a new matter rejection that the specification “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim.”

  69. 8

    “Random, this definitely is news to those Examiners who employ the approach that a reference that teaches each element anticipates the claim. I think this case has some great language to use in an Office Action response…”

    That language was already out there and has been relied on by myself and my colleagues for years. In fact, I seem to recall that it’s in the MPEP.

    Nevertheless, it’s always to have more.

  70. 7

    OK, I’ll put it out there:

    Is Verisign’s next move to request reexam for a new question of patentability based on the same 102 reference for a 103 obviousness rejection (thereby tying together the various P-O threads on 102/103 differences and the wonderful in re Swanson)?

    The “teaching of all elements” alone should make the application obvious – no? Any arrangement of the acknowledged prior art elements would merely be a matter of common sense. Very little motivation is necessary to combine a reference with itself.

  71. 6

    If a claim recites “computer configured to do A and B”, does this claim language invoke 112 para 6? If not, does the patentee get a free pass over Aristocrat issues simply by claiming “computer” instead of “computer means?”

  72. 5

    James, the embodiments in the reference were themselves probably enabled sufficiently but lacked the “all elements” prong of 102. Granted, the “enabled” inquiry often collapses into an “enabling” inquiry, but only where you have all elements first.

    And yes random, I agree, this case is *yawn*

  73. 4

    Random, this definitely is news to those Examiners who employ the approach that a reference that teaches each element anticipates the claim. I think this case has some great language to use in an Office Action response…

  74. 3

    Why is this news? Extra extra, read all about it! The principles governing anticipation are the same as yesterday! Extra, extra!

  75. 2

    Why did the court not simply disregard the reference as non-enabling and thus unusable under 102? That would still leave the door open to a determination of obviousness, of course.

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